Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistKickerFeaturesTopicsCommercial LawSectionsNewsLJN Newsletters

Overpleaded Opposition Supports DJ Motion

By Jane Shay Wald
March 27, 2007

Can a Notice of Opposition in the U.S. Patent and Trademark Office ('PTO') Trademark Trial and Appeal Board ('TTAB') give rise to an actual controversy under the Declaratory Judgment Act to support a trademark Applicant's federal declaratory judgment ('DJ') action against the Opposer? Generally, it can't ' or more accurately, it doesn't. But in Neilmed Products, Inc. v. Med-Systems, Inc., No. C 06-00964 (N.D. Cal. Jan. 10, 2007), the Northern District of California found that the Notice of Opposition pleaded detailed factors relevant to liability for trademark infringement and dilution. This enthusiastic overpleading did far more than state a claim as to why the applicant's mark should not be allowed to register, which is the TTAB's sole jurisdiction. It gave Applicant a reasonable basis to believe Opposer would sue it for infringement, thereby providing the jurisdictional basis for a DJ action.

The Declaratory Judgment Act, 28 U.S.C. '2201 permits a federal court to 'declare the rights and other legal relations' of parties to 'a case of actual controversy.' An actual controversy has been viewed as requiring the DJ plaintiff to have a reasonable apprehension that it will be subject to liability.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Law Firms are Reducing Redundant Real Estate by Bringing Support Services Back to the Office Image

A trend analysis of the benefits and challenges of bringing back administrative, word processing and billing services to law offices.

Bankruptcy Sales: Finding a Diamond In the Rough Image

There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.

Bit Parts Image

Summary Judgment Denied Defendant in Declaratory Action by Producer of To Kill a Mockingbird Broadway Play Seeking Amateur Theatrical Rights

Risks of “Baseball Arbitration” in Resolving Real Estate Disputes Image

“Baseball arbitration” refers to the process used in Major League Baseball in which if an eligible player's representative and the club ownership cannot reach a compensation agreement through negotiation, each party enters a final submission and during a formal hearing each side — player and management — presents its case and then the designated panel of arbitrators chooses one of the salary bids with no other result being allowed. This method has become increasingly popular even beyond the sport of baseball.

Disconnect Between In-House and Outside Counsel Image

'Disconnect Between In-House and Outside Counsel is a continuation of the discussion of client expectations and the disconnect that often occurs. And although the outside attorneys should be pursuing how inside-counsel actually think, inside counsel should make an effort to impart this information without waiting to be asked.